Ex Parte Dutton et al

Board of Patent Appeals and Interferences

Jun 4, 2012

11071961 (B.P.A.I. Jun. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DREW J. DUTTON, JAMES R. MACDONALD, and HENRY
WURZBURG
____________________

Appeal 2009-011872
Application 11/071,961
Technology Center 2100
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, JOHNNY A.
KUMAR, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/071,961

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1, 3-5, 10-16, 18-24, 26, 27, and 29-35 . We have
jurisdiction under 35 U.S.C. § 6(b). Claims 2, 6-9, 17, 25, and 28 were
previously cancelled.
We AFFIRM.
Introduction
According to Appellants, the invention relates to power management.
A Universal Serial Bus (USB) allows coupling of peripheral devices to a
computer system. (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. An apparatus, comprising:
a computer system, comprising:
a computer controller;
wherein the computer controller is configured to
communicate with a Universal Serial Bus (USB) device
through a sideband signal;
wherein the computer system is configured to
communicate the sideband signal to the USB device over a
sideband signal line when the sideband signal line is coupled to
the computer system; and
wherein the computer system and USB device are
operable to use the sideband signal line to trigger the other of
the computer system or USB device to return to a normal power
state from a low power state.

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Prior Art
Sartore US 6,012,103 Jan. 4, 2000
Gulick US 7,051,218 B1 May 23, 2006
(filed Jun. 28, 2002)
Kris Fleming, Power saving of using USB Selective Suspend Support
Whitepaper, Version 0.6, Intel, May 20, 2003 (“Intel”).
Universal Serial Bus Specification, Revision 2.0, Compaq, April 27, 2000
(“Compaq”).

Rejections
(1) Claims 1, 5, 10-12, 18-20, 31, 33, and 35 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gulick and Intel.
(2) Claims 3-4, 13-16, 21-24, 26-27, and 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gulick, Intel, and Compaq.
(3) Claims 30, 32, and 34 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gulick, Intel, and Sartore.

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUE 1
35 U.S.C. § 103(a): claims 1, 5, and 10-12, 18-20, 31, 33, and 35
Appellants assert their invention is not obvious over Gulick and Intel
because the references, taken alone or in proper combination, do not teach or
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suggest (i) “the computer controller is configured to communicate with a
Universal Serial Bus (USB) device through a sideband signal” and (ii)
“wherein the computer system and USB device are operable to use the
sideband signal line to trigger the other of the computer system or USB
device to return to a normal power state from a low power state” as recited
in claim 1 (App. Br. 9-10 ). Specifically, Appellants contend the Examiner
has not provided support in Gulick for the computer controller being
configured to communicate with a USB device through a sideband signal but
instead discloses communication signals passing between, for example, the
I/O hub and the processor (App. Br. 9-10).

Issue 1: Has the Examiner erred in finding the combination of Gulick
and Intel would have taught or suggested the invention as recited in claim 1?

ANALYSIS
We agree with the Examiner’s findings and conclusions and adopt
them as our own. We provide the following for emphasis. Gulick discloses
the input output (I/O) hub 204 provided access to devices of such interfaces
and buses such as Universal Serial Bus (USB) (col. 3, l. 67 to col. 4, ll. 8).
Thus, Gulick teaches the computer controller is configured to communicate
with a Universal Serial Bus (USB) device.
Further, Gulick discloses that to provide power management
functions, computer system have used sideband signals to convey various
information relating to power management in the system (col. 2, ll. 28-32).
However, contrary to Appellants’ assertion, the use is not confined to using
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sideband signals between chipset components and the microprocessor as
Gulick specifically states that is an example (id.).
Lastly, we further emphasize the Examiner is using the combination
of Gulick, which teaches or at least suggests using sideband signals in
computer systems for power management functions and Intel, which teaches
that increasingly devices are using USB to provide internal connections
between integrated peripherals (Intel, § Introduction). We note that each
reference cited by the Examiner must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole. See In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references.).
Accordingly, Appellants have not persuaded us the Examiner erred in
finding the combination of Gulick and Intel would have taught or suggested
the invention as recited in independent claim 1, commensurately recited
independent claim 10, and dependent claims 5, 11 and 12, not separately
argued.
Claims 18-20
With respect to claim 18, Appellants again argue Gulick does not
teach a sideband signal from a USB device (App. Br. 11). For the reasons
set forth above with respect to claim 1, we find Appellants’ arguments
unpersuasive. Accordingly, Appellants have not persuaded us the Examiner
erred in finding the combination of Gulick and Intel would have taught or
suggested the invention as recited in independent claim 18 and dependent
claims 19 and 20 not separately argued.
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Claim 31
With respect to claim 31, Appellants argue Gulick and Intel do not
teach or suggest “‘where the computer system is a portable computer system
and wherein the USB device is embedded in the portable computer system’”
(App. Br. 11). We agree with the Examiner that an ordinary artisan would
have found it obvious to change the location of the device, while
maintaining the same electrical connections (Ans. 44-45). We further note,
the Introduction of Intel discloses USB providing internal connections for
internally integrated peripheral components or devices (Intel, pg. 1), thus
further bolstering the Examiner’s assertion an ordinary artisan would have
found it obvious to embed a USB device in the portable computer system.
Accordingly, Appellants have not persuaded us the Examiner erred in
finding the combination of Gulick and Intel would have taught or suggested
the invention as recited in dependent claim 31.
Claims 33 and 35
As to claims 33 and 35, the Examiner has relied upon Gulick’s
teaching of STOP# (Ans. 45). Gulick teaches link devices, disconnect and
tristate their link connections in response to assertion of the STOP# signal
(col. 19, ll. 18-20). Appellants have not presented any persuasive evidence
or argument to persuade us of error in the Examiner’s findings that the
combination of Gulick and Intel would have taught or suggested the
invention as recited in commensurately recited claims 33 and 35.
Accordingly, the Examiner did not err in finding the combination of
Gulick and Intel would have taught or suggested the invention as recited in
claims 1, 5, and 10-12, 18-20, 31, 33, and 35. Therefore, the Examiner did
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not err in rejecting claims 1, 5, and 10-12, 18-20, 31, 33, and 35 under
35 U.S.C. § 103(a) for obviousness over Gulick and Intel.

ISSUE 2
35 U.S.C. § 103(a): claims 3-4, 13-16, 21-24, 26-27, and 29
Appellants present no separate arguments for claims 3, 4, 13-15, and
21-23. Therefore, Appellants have not shown the Examiner erred in finding
the combination of Gulick, Intel, and Compaq teach or suggest the invention
as recited in claims 3, 4, 13-15, and 21-23.
With respect to claims 16, 24, 26, 27, and 29, we agree with and adopt
the Examiner’s findings and conclusions (Ans. 22-24 and 27-32). Again, we
emphasize the references must not be read in isolation, but for what the
references fairly teach in combination with the prior art as a whole. Further,
Appellants have presented no evidence that modifying Gulick with the
techniques of Intel and Compaq was “uniquely challenging or difficult for
one of ordinary skill in the art” or “represented an unobvious step over the
prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citations omitted).
Accordingly, the Examiner did not err in finding the combination of
Gulick, Intel, and Compaq would have taught or suggested the invention as
recited in claims 3-4, 13-16, 21-24, 26-27, and 29. Therefore, the Examiner
did not err in rejecting claims 3-4, 13-16, 21-24, 26-27, and 29 under
35 U.S.C. § 103(a) for obviousness over Gulick, Intel, and Compaq.

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ISSUE 3
35 U.S.C. § 103(a): claims 30, 32, and 34
We agree with the Examiner’s findings and conclusions (Ans. 33- 40)
and adopt them as our own. We are not persuaded the Examiner is
combining the cited references in a piecemeal fashion based on hindsight.
Again, we note Appellants have presented no evidence that modifying
Gulick with the techniques of Intel and Sartore was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citations omitted). The skilled artisan is “a person of ordinary
creativity, not an automaton.” See KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007). Moreover, the Examiner has articulated reasoning with a
rational underpinning for the combination of analogous art.
Accordingly, the Examiner did not err in finding the combination of
Gulick, Intel, and Sartore would have taught or suggested the invention as
recited in claims 30, 32, and 34. Therefore, the Examiner did not err in
rejecting claims 30, 32, and 34 under 35 U.S.C. § 103(a) for obviousness
over Gulick, Intel, and Sartore.

DECISION
The Examiner’s rejection of claims 1, 5, 10-12, 18-20, 31, 33, and 35
under 35 U.S.C. § 103(a) as being obvious over Gulick and Intel is affirmed.
The Examiner’s rejection of claims 3-4, 13-16, 21-24, 26-27, and 29
under 35 U.S.C. § 103(a) as being obvious over Gulick, Intel, and Compaq
is affirmed.
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The Examiner’s rejection of claims 30, 32, and 34 under 35 U.S.C. §
103(a) as being obvious over Gulick, Intel, and Sartore is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

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